Facebook in Spain

Facebook versus Parobook Facebook remains one of the most popular social media. A popular trademark is everything you can wish as a trademark holder but it brings some negative side effects with it. For example, free riders. Good trademark protection is therefore a must, but is not a full guaranty.

Facebook can agree with this as they tried to prevent the application Parobook from being registered in the EU. You would say that this trademark is a clear copy: all device elements and the element BOOK are the same. But what in real life is very clear, legally can be a bit different.  The OHIM did recognize the enhanced reputation of Facebook for services of a social network and therefore agreed that there is a risk of free riding. This finding however only applies to services relating to social networking. As the OHIM found the trademarks Facebook and Parobook not very similar due to the different beginning the opposition was dismissed for the other products and services, not relating to social networking.

Facebook filed an appeal but the Board of Appeal dismisses the appeal in a recent decision. This decision clearly shows the boundaries of a trademark right although you might contest this decision as the intention of Parobook is rather clear. But one bright side for Facebook after all: OHIM discussed the meaning of Facebook (being a reference book) but says that this meaning is limited to the US, and thus recognized Facebook as a distinctive trademark.

 

Arnaud Bos

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